A brief introduction of patent registration process in China

Thursday, 19 May 2011 13:37

Step 1: Obtain Qualified Attorney

Patents registration is quite complicated in China, thus it is essential to find a patent or intellectual property lawyer in China to accomplish this task. In this era of global competition, it can be important to seek patent protection in multiple countries, and because disclosure (inadvertent or otherwise) in one country may result in a loss of patentability in others, inventors should obtain legal advice as soon in the process as possible. Moreover, residents of Patent Cooperation Treaty (PCT) member states (which include the United States and more than one hundred other countries) may file an "international patent application" that can reduce the complexity of overseas filings and allow an applicant greater time to decide in which countries to file. A qualified patent attorney will be able to help you navigate these complicated matters and select appropriate overseas counsel and agents to assist you.

Step 2: Determine Whether You Have a Priority ClaimA person who has filed an application for an invention or utility model patent in any country that is a member of the Paris Convention may, within one year after that filing, file subsequent patent applications in other countries claiming the filing date of the first application. The corresponding grace period for design patents in China is six months. Priority filing dates allow an inventor to avoid the possibility that a patent in one country could be granted to someone else in a foreign country, or that disclosure in one country subsequent to application could render an invention part of the prior art and thus unpatentable in other countries. Within these limitations, patent protection in the PRC is generally based on the "first to file" principle, in contrast to the "first to invent" system employed in the United States.

Step 3: Select a Reputable PRC Patent AgentForeign applicants without a business office in China are required to submit patent applications through officially designated agents. Chinese businesses do not face this same requirement. PRC patent agents should be able to advise you on the intricacies of filing in China and may form part of a worldwide patent prosecution team for a particular invention. Ideally such a patent agent should be familiar with the subject area of the patent.

Step 4: Prepare the Required PaperworkChinese patent applications, like those in other countries, are complicated and require substantial documentation. Applications must be in Chinese and include any relevant drawings, details of any priority claim, and a specification.

A specification must set forth the claims of the patent, including the:

Title

Designation of relevant technical field

Prior Art

Purpose of the invention

Enabling requirement

Best mode

Other administrative and ancillary information

Design patent applications require drawings or photographs of the design. If an applicant has filed an international patent application under the PCT that designates China, the applicant must provide a Chinese translation within thirty months of the priority date.

Step 5: Submit the ApplicationPatents are filed with the State Intellectual Property Office (SIPO) in Beijing. SIPO offices at the provincial and municipal levels are responsible for administrative enforcement, not examination, and thus have no role in the prosecution process.

Step 6: Preliminary ExaminationOnce the application is submitted it will undergo a preliminary examination to ensure it meets the statutory filing requirements. If there is "no cause for rejection" patents for utility models or designs will issue. Applications for invention patents that survive preliminary examination will continue to a substantive examination following a request by the applicant.

Step 7: Publication (for Inventions)SIPO will normally publish applications for invention patents eighteen months after filing unless the applicant requests an earlier publication or withdraws the application. After publication, the contents of an application are considered part of the prior art.

Step 8: Substantive Examination (for Inventions)Applicants for invention patents have up to three years from the date of application to request a substantive examination. Applicants must provide relevant prior art. At the discretion of the examiner, the results of any prior art search conducted by foreign patent authorities may also need to be disclosed. SIPO may request amendment of any part of the application found not to conform to the Patent Law.

Step 9: Granting of Patent RightIf after the relevant examination (preliminary for utility models and designs, substantive for inventions) SIPO concludes that the application is in conformity with the Patent Law, it will issue a certificate of invention, register the patent, and publish its decision. Patent rights are effective as of the date of publication.

Step 10: ReexaminationAn applicant dissatisfied with SIPO's examination of a patent application may, within three months of receiving notification of the rejection, seek reexamination by the semi-independent Patent Reexamination Board (PRB). If the applicant is dissatisfied with the PRB's decision, legal proceedings may be instituted within three months in the People's Court, generally the Administrative Division of the Beijing No. 1 Intermediate Court.

In addition, any entity or individual may request the PRB to invalidate any patent at any time. Appeals from PRB decisions may be heard by the Civil Division of the People's Court. Individuals seeking to contest or defend the validity of a patent may want to carefully evaluate the expertise of the court that would be hearing the case, as well as its record and experience in patent decisions.

We strongly recommend you to consult us when you decide to file a patent application in China.

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Peter Zhu, an experienced China attorney licensed to practice law for more than ten years, the author of this China Lawyer blog, welcomes any enquiry or consultation related to Chinese law.